Ex Parte Homer

Board of Patent Appeals and Interferences

Jun 22, 2010

10814538 (B.P.A.I. Jun. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEVEN S. HOMER
____________

Appeal 2009-004507
Application 10/814,538
Technology Center 2600
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Decided: June 22, 2010
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Before ROBERT E. NAPPI, JOHN C. MARTIN, and JOSEPH F.
RUGGIERO, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Final Rejection of
claims 1-8 and 17-21. Claims 9-16 have been allowed by the Examiner. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
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Rather than reiterate the arguments of Appellant and the Examiner,
reference is made to the Appeal Brief (filed November 16, 2007), the
Answer (mailed April 15, 2008), and the Reply Brief (filed June 5, 2008) for
the respective details. Only those arguments actually made by Appellant
have been considered in this decision. Arguments which Appellant could
have made but chose not to make in the Briefs have not been considered and
are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

Appellant’s Invention
Appellant’s invention relates to a computer input pen having a
cylindrical housing which includes an eccentrically disposed weight
disposed relative to a longitudinal axis of the cylindrical housing. The
rotational energy of the cylindrical housing relative to the weight is absorbed
by the weight which is rotationally coupled relative to the cylindrical
housing with a desired level of friction. (See generally Spec. ¶ ¶ [0002]-
[0003]).

Claim 1 is illustrative of the invention and reads as follows:

1. A computer input pen, comprising:
a cylindrical housing; and
a weight eccentrically disposed within the cylindrical housing relative
to a longitudinal axis of the cylindrical housing, the weight rotationally
coupled relative to the cylindrical housing with a desired level of friction to
absorb rotational energy of the cylindrical housing relative to the weight.

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The Examiner’s Rejection

The Examiner’s Answer relies on the following prior art reference:
Danis US 6,215,480 B1 Apr. 10, 2001

Claims 1-8 and 17-21, all of the appealed claims stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Danis.
.
ISSUES
The pivotal issues before us are whether the Examiner erred in
determining that an ordinarily skilled artisan would have found it obvious to
a) design the necessarily existing level of friction in the device of
Danis to be as low as possible, and that this low level of friction would
correspond to the desired level of friction as claimed, and
b) to reduce the amount of undesirable rotation of the sensor in
Danis by adding a frictional element to the various surfaces to increase the
amount of friction applied to the weighted cam or to allow friction between
the housing and the weighted cam.

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966) (stating that 35 U.S.C.
§ 103 leads to three basic factual inquiries: the scope and content of the prior
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art, the differences between the prior art and the claims at issue, and the
level of ordinary skill in the art). Furthermore,
‘there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, the analysis need not seek
out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person
of ordinary skill in the art would employ.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re
Kahn, 441 F.3d 977, 987-988 (Fed. Cir. 2006)).

ANALYSIS
Claims 1, 4, 17, and 18
With respect to independent claim 1, Appellant’s arguments focus on
the contention that Danis has no teaching or suggestion of the particular
claimed relative coupling of the eccentrically disposed weight and the
cylindrical housing of the computer input pen. In particular, Appellant
contends (App. Br. 5-7 and 12-14; Reply Br. 4-8) that Danis has no teaching
or suggestion of the weight in Danis being “rotationally coupled relative to
the cylindrical housing with a desired level of friction to absorb rotational
energy of the cylindrical housing relative to the weight” as claimed.
In Appellant’s view (App. Br. 6-7; Reply Br. 5), while the Examiner
suggests that a low level of friction is the desired level of friction relative to
the weighted cam 32 in Danis, there is no amount of friction in Danis that
would be desired so that the weighted cam would freely rotate within the
housing, thereby enabling accurate scrolling of text as the housing body 10
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rolls. Appellant makes a similar argument with respect to independent claim
17 which is set forth in “means plus function” format.
We do not find Appellant’s argument to be persuasive of any error in
the Examiner’s stated position. Initially, we agree with the Examiner’s
determination (Ans. 5), which is not disputed by Appellant, that the
rotational coupling of the weighted cam 32 and the housing 10 in Danis
would necessarily have some level of friction relative to the weighted cam.
With this in mind, we agree with the Examiner (id.) that an ordinarily skilled
artisan would have recognized and appreciated the desire to design the level
of friction in Danis to be as low as possible so that only a small amount of
rotational energy is absorbed, thereby enabling the proper display of scrolled
text. Since some level of friction necessarily exists in Danis, we fail to see
why making such level of friction as low as possible would not result in this
low level of friction being the desired level of friction as claimed.
For the above reasons, we sustain the Examiner’s 35 U.S.C. § 103(a)
rejection of independent claims 1 and 17, as well as dependent claims 4 and
18 not separately argued by Appellant.

Claims 2, 3, 5-8, and 19-21
We do not sustain the Examiner’s obviousness rejection, based on
Danis, of dependent claims 2, 3, 5-8, and 19-21. Each of these claims recites
“a frictional element” or a “friction means” disposed on or formed on
various surfaces of the computer input pen such as the eccentrically disposed
weight, the cylindrical housing, or the shaft to which the weight is
rotationally coupled.
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As previously discussed, the Examiner has taken the position, with
which we agree, with respect to claims 1, 4, 17, and 18 that, because of the
naturally existing level of friction relative to the weighted cam in Danis, it
would be desirable to make this level of friction in Danis as low as possible
to enable proper display of scrolled text. The Examiner, however, as taken a
contradictory position (Ans. 6) with respect to claims 2, 3, 5-8, and 19-21 by
suggesting that extremely low levels of friction are undesirable and would
result in unwanted changing of the displayed text in Danis due to the extra
rotation of the sensor. In this viewpoint, the Examiner suggests that it would
be desirable to reduce the amount of undesirable rotation of the sensor in
Danis by adding a frictional element to the various surfaces to increase the
amount of friction applied to the weighted cam or to allow friction between
the housing and the weighted cam.
We find no basis on the record before us to support the Examiner’s
conclusion. We agree with Appellant (App. Br. 7-8; Reply Br. 8) that the
inclusion of any friction element to add friction beyond that which naturally
occurs in Danis would impede the rotation of the cam 32 and affect the
ability of the sensor 31 to accurately detect the speed and direction of
rotation of the cylindrical housing body 10.

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CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner’s obviousness rejection based on Danis was not in error with
respect to claims 1, 4, 17, and 18, but was in error with respect to claims 2,
3, 5-8, and 19-21.

DECISION
The Examiner’s decision rejecting claims 1-8 and 17-21 under
35 U.S.C. § 103(a) is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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